Before you put that new idea out there . . .

Intellectual property considerations to check – and maybe change – when making projects public

You’re full of enthusiasm and excitement! You have a new company, a new product, a new discovery or all three. Your people want to shout it from the rooftops and plaster it all over your website. Of course they do! Who wouldn’t? But take a deep breath and spend five or ten minutes ensuring that you will not jeopardize anything. Here are some things for you to consider:

Your company sells widgets, and your people came up with a cool company name. You checked the Washington State register of businesses and made sure that no one else uses that name. Great! Did you check the trademark listings at the United States Patent and Trademark Office? No one in Washington uses that name, but if you plan to sell products on the Internet using a website address including your company name, you could be walking into trouble. You may discover that a company in some other state has a registered federal trademark for your company name or a similar name, and that company sells widgets too. If you put your website up with that name and start selling widgets, the other company may send you a letter informing you of its trademark. Your choice: fight the suit ($$$) or change your company name. Yikes!

A similar problem can occur with identity materials used to build your brand. The brand campaign may have particular images and colors that you want to become associated with your company. A quick check to make sure that none of them are too close to well-known brands and images can save you a lot of time and hassle later. No swooshes, no golden arches, no NFL team colors.

All of this applies to new product names. Say that another company sells a product called the Widget 2 and has a registered trademark for that name. Your product manager gets overly enthusiastic about your company’s newest product, the Widget 2.0. He’s plastered product announcements all over your website without checking. Whoops. Here comes the letter from the owners of the Widget 2 trademark.

Speaking of the Widget 2.0, did you file a patent application on the unique features and capabilities of the product? Or did you blog about a discovery that was eventually included in the Widget 2.0? It’s okay; the U.S. patent laws give you a year to file a patent application after either a public disclosure of the invention or an offer for sale of products containing the invention. So get the application filed! And keep an eye on your blog . . .

And finally, let’s talk about your website. Your web designer found a photograph to use as part of your product announcement. Maybe the Widget 2.0 is for mountain climbing and she found a stunning picture of a mountain online, downloaded it and put it on your website. Hmmm. Was it a free photograph? Even if it didn’t cost anything, does it require attribution identifying the photographer or other copyright owner? Did she put the attribution on your website? Photographers may offer images for free as long as the website identifies them, but not identifying the photographer can result in a nasty letter from a law firm and a hefty fee to ensure that the photographer doesn’t file suit. If your web designer did pay for the photograph, keep the records of the date and time of download and the payment, just in case.

Keep your excitement and your enthusiasm. Promote your new business, your new product, your new discovery. Just take a second, make some checks, maybe make some changes, and then throw the party!

Attorney Julie Reed is a member of Miller Nash Graham & Dunn’s patent team. With more than 25 years of intellectual property experience, Julie has participated in the growth of technologies from their formative stages to market acceptance. She helps develop strategic plans that tightly couple patent acquisition and licensing with business strategies. Julie can be reached by phone at 360-619-7028 or by email at julie.reed@millernash.com.

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